`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 1of11PagelD#: 551
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 2 of 11 PageID #: 552
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`VERIZON COMMUNICATIONS INC.,
`ET. AL.,
`
`
`
`Defendants.
`
`
`Case No. 2:22-cv-00185-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`DISCOVERY ORDER
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(1), each party shall disclose to every other party the following information:
`
`(a)
`
`(b)
`
`(c)
`
`the correct names of the parties to the lawsuit;
`
`the name, address, and telephone number of any potential parties;
`
`the legal theories and, in general, the factual bases of the disclosing party’s claims
`
`or defenses (the disclosing party need not marshal all evidence that may be offered
`
`at trial);
`
`(d)
`
`the name, address, and telephone number of persons having knowledge of relevant
`
`facts, a brief statement of each identified person’s connection with the case, and a
`
`brief, fair summary of the substance of the information known by any such person;
`
`DM2\16579143.1
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 3 of 11 PageID #: 553
`
`
`
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity carrying
`
`on an insurance business may be liable to satisfy part or all of a judgment entered
`
`in this action or to indemnify or reimburse for payments made to satisfy the
`
`judgment;
`
`(f)
`
`(g)
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`2.
`
`Disclosure of Expert Testimony.1 A party must disclose to the other parties the identity
`
`of any witness it may use at trial to present evidence under Federal Rule of Evidence 702,
`
`703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony in
`
`the case or one whose duties as the party’s employee regularly involve giving expert
`
`testimony, provide the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of Civil
`
`Procedure 26(a)(2)(C).
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,2 each party will make the
`
`following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
`
`
`1 All expert reports should be written such that the report is organized with discrete
`paragraph numbers.
`2 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
`
`DM2\16579143.1
`
`2
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 4 of 11 PageID #: 554
`
`
`
`
`i.
`
`If a party claiming patent infringement asserts that a claim element is a
`
`software limitation, the party need not comply with P.R. 3-1 for those claim
`
`elements until 30 days after source code for each Accused Instrumentality
`
`is produced by the opposing party. Thereafter, the party claiming patent
`
`infringement shall identify, on an element-by-element basis for each
`
`asserted claim, what source code of each Accused Instrumentality allegedly
`
`satisfies the software limitations of the asserted claim elements.
`
`ii.
`
`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
`
`patent infringement may serve, not later than 30 days after receipt of a
`
`Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that
`
`amend only those claim elements identified as software limitations by the
`
`party claiming patent infringement.
`
`(b)
`
`produce or permit the inspection of all documents, electronically stored
`
`information, and tangible things in the possession, custody, or control of the party
`
`that are relevant to the pleaded claims or defenses involved in this action, except to
`
`the extent these disclosures are affected by the time limits set forth in the Patent
`
`Rules for the Eastern District of Texas; and
`
`(c)
`
`provide a complete computation of any category of damages claimed by any party
`
`to the action, and produce or permit the inspection of documents or other
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure of
`
`DM2\16579143.1
`
`3
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 5 of 11 PageID #: 555
`
`
`
`
`4.
`
`5.
`
`the computation of damages may be deferred until the time for Expert Disclosures
`
`if a party will rely on a damages expert.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures described
`
`in Paragraphs 1-3 together with:
`
`(a)
`
`Interrogatories: Plaintiff may serve twenty-five (25) interrogatories on Defendants
`
`and Defendants may serve twenty-five (25) interrogatories on Plaintiff.
`
`(b)
`
`Requests for Admission: Plaintiff may serve forty (40) requests for admissions on
`
`Defendants and Defendants may serve forty (40) requests for admissions on
`
`Plaintiff. In addition, the parties will be permitted to serve a reasonable number of
`
`requests for admission that seek an admission as to (a) the authenticity of a
`
`particular document or thing; (b) the admissibility of a particular document tor
`
`thing; and/or (c) whether a document qualifies as a “printed publication” or other
`
`prior art as of a certain date under 35 U.S.C. § 102. The parties shall work together
`
`in good faith to agree on a stipulation as to the authenticity of their own documents
`
`to avoid the service of large numbers of request for admission relating to
`
`authenticity, admissibility, and/or qualification as a “printed publication.” In lieu
`
`of serving authentication requests, the parties will confer to work out an appropriate
`
`agreement/stipulation concerning document authenticity prior to trial.
`
`(c)
`
`Fact Depositions: Plaintiff may take up to forty-five (45) total hours of deposition
`
`of Defendants, including depositions under 30(b)(1) and 30(b)(6). Defendants may
`
`take up to forty-five hours (45) total hours of deposition of Plaintiff, including
`
`depositions under 30(b)(1) and 30(b)(6). Depositions of experts or third parties do
`
`DM2\16579143.1
`
`4
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 6 of 11 PageID #: 556
`
`
`
`
`not count against these limits. However, no single 30(b)(1) witness may be deposed
`
`for more than seven (7) hours, if not also designated as a 30(b)(6) witness.
`
`(d)
`
`Experts: Testifying experts shall not be subject to discovery on any draft of their
`
`reports or declarations in this case and such draft reports, declarations, notes,
`
`outlines, or any other writings leading up to an issued report or filed declaration in
`
`this litigation are exempt from discovery. In addition, all communications to and
`
`from a testifying expert, and all materials generated by a testifying expert with
`
`respect to that person’s work in this case, are exempt from discovery unless relied
`
`upon by the expert in forming any opinions in this litigation. If an expert produces
`
`a report, the expert must also produce all materials on which the expert relied. No
`
`discovery can be taken from any consulting expert except to the extent that
`
`consulting expert has provided information, opinions, or other materials to a
`
`testifying expert, who then relies upon such information, opinions, or other
`
`materials in forming his or her final report, declaration, trial or deposition
`
`testimony, or any opinion in this case. Materials, communications, and other
`
`information exempt from discovery under this Paragraph shall be treated as attorney
`
`work product for the purposes of this litigation.
`
`(e)
`
`Expert Depositions: Each party is limited to three (3) testifying expert witnesses.
`
`Each testifying expert may be deposed for no more than seven (7) hours per report
`
`offered by the expert.
`
`(f)
`
`Third-Party Discovery: The parties may conduct third-party discovery including
`
`depositions and document subpoenas. The total hours for these third-party
`
`depositions shall not exceed forty (40) hours per party.
`
`DM2\16579143.1
`
`5
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 7 of 11 PageID #: 557
`
`
`
`
`(g)
`
`Any party may later move to modify these limitations for good cause.
`
`6.
`
`Privileged Information. There is no duty to disclose privileged documents or
`
`information. However, the parties are directed to meet and confer concerning privileged
`
`documents or information after the Status Conference. By the deadline set in the Docket
`
`Control Order, the parties shall exchange privilege logs identifying the documents or
`
`information and the basis for any disputed claim of privilege in a manner that, without
`
`revealing information itself privileged or protected, will enable the other parties to assess
`
`the applicability of the privilege or protection. Any party may move the Court for an order
`
`compelling the production of any documents or information identified on any other party’s
`
`privilege log. If such a motion is made, the party asserting privilege shall respond to the
`
`motion within the time period provided by Local Rule CV-7. The party asserting privilege
`
`shall then file with the Court within 30 days of the filing of the motion to compel any proof
`
`in the form of declarations or affidavits to support their assertions of privilege, along with
`
`the documents over which privilege is asserted for in camera inspection. However, if the
`
`party asserting privilege seeks an in camera review by the Court, such party shall first
`
`obtain leave from the Court prior to delivery of documents to the Court.
`
`7.
`
`Signature. The disclosures required by this Order shall be made in writing and signed by
`
`the party or counsel and shall constitute a certification that, to the best of the signer’s
`
`knowledge, information and belief, such disclosure is complete and correct as of the time
`
`it is made. If feasible, counsel shall meet to exchange disclosures required by this Order;
`
`otherwise, such disclosures shall be served as provided by Federal Rule of Civil Procedure
`
`5. The parties shall promptly file a notice with the Court that the disclosures required under
`
`this Order have taken place.
`
`DM2\16579143.1
`
`6
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 8 of 11 PageID #: 558
`
`
`
`8.
`
`Duty to Supplement. After disclosure is made pursuant to this Order, each party is under
`
`a duty to supplement or correct its disclosures immediately if the party obtains information
`
`on the basis of which it knows that the information disclosed was either incomplete or
`
`incorrect when made or is no longer complete or true.
`
`9.
`
`Discovery Disputes.
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
`
`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
`
`serve upon a party required to make disclosures (“Responding Party”) a written
`
`statement, in letter form or otherwise, of any reason why the Requesting Party
`
`believes that the Responding Party’s disclosures are insufficient. The written
`
`statement shall list, by category, the items the Requesting Party contends should be
`
`produced. The parties shall promptly meet and confer. If the parties are unable to
`
`resolve their dispute, then the Responding Party shall, within 14 days after service
`
`of the written statement upon it, serve upon the Requesting Party a written
`
`statement, in letter form or otherwise, which identifies (1) the requested items that
`
`will be disclosed, if any, and (2) the reasons why any requested items will not be
`
`disclosed. The Requesting Party may thereafter file a motion to compel.
`
`(b)
`
`An opposed discovery related motion, or any response thereto, shall not exceed 7
`
`pages. Attachments to a discovery related motion, or a response thereto, shall not
`
`exceed 5 pages. No further briefing is allowed absent a request or order from the
`
`Court.
`
`(c)
`
`Prior to filing any discovery related motion, the parties must fully comply with the
`
`substantive and procedural conference requirements of Local Rule CV-7(h) and (i).
`
`DM2\16579143.1
`
`7
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 9 of 11 PageID #: 559
`
`
`
`
`Within 72 hours of the Court setting any discovery motion for a hearing, each
`
`party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet and
`
`confer in person or by telephone, without the involvement or participation of other
`
`attorneys, in an effort to resolve the dispute without Court intervention.
`
`(d)
`
`Counsel shall promptly notify the Court of the results of that meeting by filing a
`
`joint report of no more than two pages. Unless excused by the Court, each party’s
`
`lead attorney shall attend any discovery motion hearing set by the Court (though
`
`the lead attorney is not required to argue the motion).
`
`(e)
`
`Any change to a party’s lead attorney designation must be accomplished by motion
`
`and order.
`
`(f)
`
`Counsel are directed to contact the chambers of the undersigned for any “hot-line”
`
`disputes before contacting the Discovery Hotline provided by Local Rule CV-
`
`26(e). If the undersigned is not available, the parties shall proceed in accordance
`
`with Local Rule CV-26(e).
`
`
`
`10.
`
`No Excuses. A party is not excused from the requirements of this Discovery Order because
`
`it has not fully completed its investigation of the case, or because it challenges the
`
`sufficiency of another party’s disclosures, or because another party has not made its
`
`disclosures. Absent court order to the contrary, a party is not excused from disclosure
`
`because there are pending motions to dismiss, to remand or to change venue.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery.
`
`DM2\16579143.1
`
`8
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 10 of 11 PageID #: 560
`
`
`
`
`(a)
`
`Service by Electronic Mail: The Parties will make every effort to serve all
`
`documents electronically, either by ECF or by email. The parties agree to accept
`
`service by email to all counsel of record for the party to be served. Where a
`
`document is too large to serve by email, the serving party shall send an email notice
`
`providing instructions for downloading the document via FTP or similar file
`
`transfer service.
`
`(b)
`
`Third-Party Discovery: A party who serves a subpoena on a third party in the
`
`above-captioned cases shall immediately provide a copy to the other party. A party
`
`who receives documents from a third party pursuant to a subpoena will reproduce
`
`those documents to the other party within three (3) business days. Where
`
`reproduction of documents within three (3) business days is not possible, the party
`
`who received the documents will provide prompt notice to the other party and will
`
`work in good faith to resolve the issue on a case-by-case basis. The parties agree to
`
`consult with each other before scheduling any third-party deposition and to provide
`
`at least five (5) business days’ notice to allow for the coordination of depositions.
`
`(c)
`
`Exception to the Obligation to Log Privileged Documents: Unless good cause is
`
`shown, the parties shall not be required to log any privileged documents created on
`
`or after the commencement of the above-captioned lawsuit, as determined with
`
`respect to each party individually.
`
`(d)
`
`Pursuant to Federal Rule of Evidence 502(d), inadvertent production of materials
`
`covered by the attorney-client privilege or work-product protection is not a waiver
`
`in this or any other federal or state proceeding. In case of inadvertent production,
`
`at the producing party’s request, the receiving party shall immediately return or
`
`DM2\16579143.1
`
`9
`
`
`
`Case 2:22-cv-00185-JRG Document 36-1 Filed 10/10/22 Page 11 of 11 PageID #: 561
`
`
`
`
`destroy the inadvertently produced materials. The producing party will provide a
`
`privilege log in accordance with Paragraph 6.
`
`13.
`
`Standing Orders. The parties and counsel are charged with notice of and are required to
`
`fully comply with each of the Standing Orders of this Court. Such are posted on the Court’s
`
`website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan. The substance
`
`of some such orders may be included expressly within this Discovery Order, while others
`
`(including the Court’s Standing Order Regarding Protection of Proprietary and/or
`
`Confidential Information to Be Presented to the Court During Motion and Trial Practice)
`
`are incorporated herein by reference. All such standing orders shall be binding on the
`
`parties and counsel, regardless of whether they are expressly included herein or made a
`
`part hereof by reference.
`
`
`
`
`
`DM2\16579143.1
`
`10
`
`